United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
NONFINAL OFFICE
ACTION
International Registration No. 1547811
Notice of Provisional Full
Refusal
Deadline for responding. The USPTO must receive applicant’s response within six
months of the “date on which the notification was sent to WIPO (mailing date)” located on the WIPO cover letter, or the U.S. application will be abandoned. To
confirm the mailing date, go to the USPTO’s Trademark Status and Document Retrieval (TSDR) database, select “US Serial, Registration, or Reference No.,” enter the U.S. application serial number in the blank text box, and click on “Documents.” The mailing
date used to calculate the response deadline is the “Create/Mail Date” of the “IB-1rst Refusal Note.”
Respond to this Office action using the USPTO’s Trademark Electronic Application System (TEAS). A link to the appropriate
TEAS response form appears at the end of this Office action.
Discussion of provisional full refusal. This is a provisional full refusal of the request for extension of protection to the United States of the international registration, known in the United States as a U.S. application based on
Trademark Act Section 66(a). See 15 U.S.C. §§1141f(a), 1141h(c).
The referenced application has been reviewed by the assigned trademark examining
attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a);
TMEP §§711, 718.03.
SEARCH OF USPTO DATABASE OF MARKS
The trademark examining attorney searched the USPTO database of registered and pending
marks and found no conflicting marks that would bar registration under Trademark Act Section 2(d). 15 U.S.C. §1052(d); TMEP §704.02.
IDENTIFICATION OF GOODS
The identification of goods is indefinite and must be clarified because it does not
sufficiently identify the nature of certain of applicant’s central processing units, as well as its chips, programs, software, network communication equipment, television apparatus and sensors, and
impermissibly uses brackets. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if
accurate: Electronic chips for the manufacture of [integrated circuits]; printed circuits; multiprocessors chips; computer central processing units [processors]; digital
signal processors; graphics processor units [GPUs]; central processing units for processing information, data, sound and images; computer programs [downloadable software] for {indicate functionality of computer programs}; computer servers; computer memory devices; computer software, recorded,
for {indicate functionality of computer programs}; computer hardware; semiconductor memory devices; integrated circuits; integrated circuit cards; network communication
equipment, namely, {indicate specific equipment}; cell phones; smartwatches; humanoid robots with artificial intelligence; tablet computers; batteries, electric; vehicle radios;
electronic navigational and positioning apparatus and instruments; radar apparatus; loudspeakers; television apparatus for projection purposes; earphones; virtual reality
headsets; wearable video display monitors; set-top boxes; camcorders; optical sensors.
IDENTIFICATION OF SERVICES
The identification of services is indefinite and must be clarified because it does not
sufficiently identify the nature of applicant’s technical research, technical project studies and cloud computing services, and impermissibly uses brackets.
See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate: Technical research
in the field of {indicate field of research}; research and development of new products for others; scientific research; technical project studies, namely,
{indicate specific nature of services}; telecommunications technology consultancy; computer programming; computer software design; updating of computer software; consultancy in the design and
development of computer hardware; maintenance of computer software; recovery of computer data; conversion of data or documents from physical to electronic media; computer system design; data
conversion of computer programs and data [not physical conversion]; computer software consultancy; rental of web servers; providing search
engines for the internet; web site design consultancy; information technology [IT] consultancy; electronic data storage; providing information on computer technology and programming via a web site;
cloud computing featuring software for {indicate functionality of software}; computer technology consultancy; computer security consultancy; developing of driver and operating
system software.
Applicant’s goods and/or services may be clarified or limited, but may not be
expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not
substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.
See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the
ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods
and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark
applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
In a Trademark Act Section 66(a) application, classification of goods and/or services may
not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d),
1904.02(b). Additionally, classes may not be added or goods and/or services transferred from one class to another in a multiple-class Section 66(a)
application. 37 C.F.R. §2.85(d); TMEP §1401.03(d).
DISCLAIMER REQUIRED
Applicant must disclaim the wording “POWERED BY” because it is merely descriptive, or
deceptively misdescriptive, of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and services. See 15 U.S.C.
§1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
A “disclaimer” is a statement in the application record that an
applicant does not claim exclusive rights to an unregistrable component of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978,
979-80, 144 USPQ 433, 433 (C.C.P.A. 1965); TMEP §1213. A disclaimer does not physically remove the disclaimed matter from the mark or otherwise affect the appearance
of the mark. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d at 979, 144 USPQ2d at 433; TMEP §1213.
The attached evidence from dictionary.com shows this wording means “(of a machine, vehicle, etc.) having a specified fuel or prime
mover” and “used to indicate the agent after a passive
verb.” Thus, the wording merely describes, or deceptively misdescribes, applicant’s goods and services because they involve an agency mover of
machines.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “POWERED BY” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see
the Disclaimer
webpage.
DESCRIPTION OF MARK REQUIRED
Applicant must submit an amended description of the mark that agrees with the
mark on the drawing. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. The current description is inconsistent with the
mark on the drawing and thus is inaccurate. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate
and identify only those literal and design elements appearing in the mark. See 37 C.F.R. §2.37; TMEP §§808.02, 808.03(d).
The following description is suggested, if accurate: The mark consists of a square frame with rounded corners in which the stylized words ‘Powered by’ are in the first line and the stylized word Kunpeng is in the second line. A
device consisting of a quadrangle and an irregular pentagon chevron is under the word Kunpeng.
Applicant must be represented by a U.S.-licensed attorney at the USPTO to respond to or appeal the provisional refusal. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by an attorney who is an active
member in good standing of the bar of the highest court of a U.S. state or territory. 37 C.F.R. §§2.11(a), 11.14; Requirement of U.S.-Licensed
Attorney for Foreign-Domiciled Trademark Applicants & Registrants, Examination Guide 4-19, at I.A. (Rev. Sept. 2019). An individual applicant’s domicile is
the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A
juristic entity’s domicile is the principal place of business; i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s
activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. Because applicant is foreign-domiciled, applicant must appoint such
a U.S.-licensed attorney qualified to practice under 37 C.F.R. §11.14 as its representative before the application may proceed to registration. 37 C.F.R.
§2.11(a). See Hiring a
U.S.-licensed trademark attorney for more information.
Only a U.S.-licensed attorney can take action on an application on behalf of a foreign-domiciled applicant. 37 C.F.R.
§2.11(a). Accordingly, the USPTO will not communicate further with applicant about the application beyond this Office action or permit applicant to make future
submissions in this application. And applicant is not authorized to make amendments to the application.
To appoint or designate a U.S.-licensed attorney. To appoint an attorney, applicant should submit a
completed Trademark Electronic Application System (TEAS) Change Address or Representation form. The newly-appointed attorney must submit a TEAS Response to
Examining Attorney Office Action form indicating that an appointment of attorney has been made and address all other refusals or requirements in this action, if
any. Alternatively, if applicant retains an attorney before filing the response, the attorney can respond to this Office action by using the appropriate TEAS
response form and provide his or her attorney information in the form and sign it as applicant’s attorney. See 37 C.F.R.
§2.17(b)(1)(ii).
RESPONSE TO OFFICE ACTION
Response guidelines. For this application to proceed,
applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against
the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office
Actions” and the informational video “Response to Office Action” for more information and tips on responding.
Please call or email the assigned trademark examining attorney to resolve the issues in this Office
action. Although the USPTO does not accept emails as responses to Office actions, communication by phone or email is permissible to agree to proposed amendments to
the application that will immediately place the application in condition for publication, registration, or suspension. See 37 C.F.R. §2.62(c); TMEP
§707.
How to respond. Click to file a response to this nonfinal Office action.
/Barney L. Charlon/
Trademark Examining Attorney
Law Office 104
(571) 272-9141
(571) 272-9104 (fax)
barney.charlon@uspto.gov
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause the
application to abandon. A response or notice
of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA
maintenance or unforeseen circumstances could affect an applicant’s
ability to timely respond.